USPTO Patents Application 09595622

SEP 19*2005 16:23 FR SNELL UIILMER PHX 1 G02 382 6070 TO 915712738300 P

Serial No. 09/595,622
Atty. Docket No. 70655.8100

REMARKS

Applicant hereby replies to the final Office Action dated August 24, 2005 within the
shortened two-month period for reply. Thus, Applicant requests an Advisory Action, if necessary.
Claims 1-8, 11, 19-20, 22-23, 27-28 and 36 were pending in the application and the Examiner
rejects claims 1-8, 1 1, 19-20, 22-23, 27-28 and 36. No new matter is added in this Reply.
Applicant asserts that the application is in condition for allowance and reconsideration of the
pending claims is requested.

Rejections under 35 U.S.C. S 103

The Examiner rejects claims 1-8, 1 1, 19-20, 22-23, 27-28 and 36 under 35 U.S.C. § 103(a)
as being unpatentable over Markus et al., U.S. Patent No. 6,490,601 ("Markus") in view of Mohan
et al., U.S. Patent Publication No. 2003/01403 12 Al ("Mohan"). Applicant respectfully traverses
this rejection.

Markus discloses a server for automatically filling in form fields of an electronic document
by a user creating a profile, wherein the profile contains information that would be commonly used
to fill out an online form such as, for example, first and last name, address, telephone number, email
address, credit card number, etc. When the user subsequently accesses an online form that has been
previously mapped by a privacy bank, a profile bundle is created and transmitted to the user's
browser application, where data elements from the bundle are inserted into the various form fields
as indicated by the map.

According to Markus, in order to automatically fill form fields, a user must set up an
account with a "privacy bank". In addition to choosing a log-in ID and password, the user enters
text into a variety of fields reflecting common data requirements of an electronic form (e.g. name,
address, telephone number, email address, etc.). This data is then stored at a privacy bank server
where it may be subsequently retrieved, transmitted to the user's computer over a network and used
to fill out an electronic form.

The Examiner correctly notes that Marcus does not disclose, "obtaining user entered data
from the electronic form, wherein the user entered data is at least one of absent from the user profile
and different from the user data in a corresponding field" and "updating the user profile with the
user entered data" (page 6, paragraph 3). However, the Examiner asserts that these steps are
disclosed by Mohan.

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Serial No. 09/595,622
Atty, Docket No. 70655.8100

Mohan generally discloses a form fill utility that enables end users to quickly complete
online forms with little or no keystrokes. Specifically, Mohan discloses a user profile that is
maintained by the user through an interface to the form fill host. Mohan fhrther discloses a
transaction database that stores forms that have been previously filled out by the user. It is data
residing in the transaction database that is generally used to fill in subsequent matching forms;
however Mohan discloses that in one embodiment, the user can select whether to fill out a form
using data from the user profile, the transaction database or both.

The Examiner has directed Applicant to paragraphs 95, 96 and 102 as disclosing the step o£
"updating the user profile with the user entered data." Specifically, the Examiner states that
"storing the form submitted with the user-entered information to the IIM at server where the user-
entered data can be data not found in the user's profile implies that data in the user profile at IIM is
updated with the user-entered data" (page 5, paragraph 5). Applicant asserts that Mohan does not
disclose or imply updating a user profile in this manner.

Paragraph 95 simply discloses that a user is permitted to edit data in a form after it has been
filled out or to enter new data that is required by a form, but is not included in the user's profile.
Paragraph 96 discloses that when a user submits a form to the destination server, the system stores
the information to the user's transaction database. As previously noted, the user may select to have
a subsequent form filled with information from the transaction database, from which the
information submitted in the preceding form submission will be used to fill the subsequent form.
However, neither of paragraphs 95 or 96 disclose that the user profile is updated in any way. To the
contrary, Mohan discloses that in order to change information in a user profile, the user must access
the IIM and manually edit the data in the user profile. For example, paragraph 93 of Mohan states,
"In this way, the user only had to update his or her records once, in the profile, and that change is
carried through the IIM" (emphasis added). In other words, changes are made to the user profile
itself. Only after such changes are made to the profile will all subsequent forms be filled with the
changed profile data.

Accordingly, Mohan requires users to update their user profile when any information
changes (e.g. billing address, telephone number, credit card number, etc.); otherwise forms will not
be filled in correctly. This is an important distinction because a user of the Mohan system must
remember to change their profile information prior to filling out a form. For example, a user of the
Mohan system accesses an electronic form and invokes the IIM to fill the form with his personal

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Serial No. 09/595,622
Atiy. Docket No. 70^55.8100

data. After the form is filled, the user notices that the address entered in the form is his old address.
The user will need to enter the correct address in the electronic form and then subsequently
remember to access his profile on the IIM to update his address. As such, Mohan does not disclose
or suggest at least, Updating the user profile with the user entered data," as similarly recited by
independent claims 1 and 36.

Dependent claims 2-8, 11, 19-20, 22-23 and 27-28 include all the limitations of independent
claim 1, so dependent claims 2-8, 11, 19-20, 22-23 and 27-28 are patentable for at least the same
reasons set forth above, as well as in view of their own respective features.

Applicant respectfully submits that the pending claims are in condition for allowance.
Reconsideration of the application is thus requested. The Commissioner is hereby authorized to
charge any fees which may be required, or credit any overpayment, to Deposit Account No. 19-
2814. Applicant invites the Office to telephone the undersigned if the Examiner has any questions
regarding this Reply or the present application in general.

SNELL & WILMER L.L.P.

400 E. Van Buren

One Arizona Center

Phoenix, Arizona 85004

Phone: 602-382-6228

Fax: 602-382-6070

Email: hsobelman@swlaw.com

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Dated: September 1 9. 2005

eg. No. 39,038

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